Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Friday, 29 April 2011

Victoria calls for "actual cooperation, not just
fluffy conversation at the top level"

The IPKat's final report on the Fordham IP Conference brings you news of the keynote address of Victoria Espinel, the White House Intellectual Property Enforcement Coordinator (IPEC). "What a difference a year makes", she said as she compared her somewhat sparse message at the conference a year ago with the cornucopia of exciting news that she conferred upon the corresponding audience this lunchtime.

Having compressed her one-year allocated for crafting a strategic plan into just six months, Victoria told us how much effort has gone into seeking consensus -- an effort which has borne fruit in uniting business and labour, Democrats and Republicans and all sorts of other warring factions in support of a vigorous pro-IP policy at home and abroad. Dialogue, not consultation, is her aim, and she maintains it with the Department of Justice, the Department of Commerce, Immigration and Customs Enforcement and other concerned bodies (a total of 17,000 Federal employees are apparently involved in IP enforcement issues of one sort or another).

A rare sight at Fordham: Hugh Hansen unable
to interrupt a speaker. What might be be thinking ...?

Asserting that the US must lead by example, Victoria declared that the best place to start is at home, making sure that Federal procurement involves only lawful product and proper software licences, keeping all infringing goods out of the Federal supply chain. She also emphasised the need to help US businesses overseas by deploying personnel on foreign soil, notably China -- where many US businesses require guidance and assistance in seeking to protect and enforce their IP rights. Other activity she mentioned included the proposal for raising the penalty for trade secrets theft via a new industrial espionage bill, and the In Our Sites initiative which is said to be achieving highly positive results in its early stages, with four crackdowns on rogue websites resulting in the seizure of 100 or so domain names.

Victoria's message was a positive and impressive one, quite at odds with some of the downbeat assessments privately expressed by some of the conference participants about having to learn to live with a level of infringement that we can't bring down. It is a message which the IPKat will be taking back to England with him and which he looks forward to drawing to the attention of the All Party Parliamentary Intellectual Property Group (here) next month.

Today's programme opened with a sunrise seminar at 7.30am on the subject "Rule of Law on the Internet: Feasible or Fantasy?", chaired by renowned IP scholar and jay-walking analyst Hugh Hansen. The keynote address was delivered by Richard Cotton (NBCUniversal Media), who listed five axiomatic propositions:

There was a need to move forward in terms of internet rule of law, since we can't stay where we are;

Any solution to current problems of content control must be rooted in the technology of the internet itself;

Regard must be have for the ecosystem, particularly with regard to (i) the way law enforcement bodies work and (ii) the roles played by creators of the broadband internet infrastructure (here Richard drew an analogy with the role played by banks as conduits for money-laundering -- they had to be brought into the problem-solving process);

Due regard must be had for competing interests and values, such as privacy, access to information and freedom of expression;

It is unrealistic to talk of a 100% successful solution, and it is more important to identify a broadly workable one.

This sparked off a good deal of discussion from the large body of panellists, most notable of whom was Andrew P. Bridges (Winston & Strawn LLP). Like Richard, Andrew also thinks in units of five. He argued that the rule of law was based upon the pillars of consistency, universality, shared values, respect and fairness. Any solution to the problem of unrestricted copying of internet-accessed material which failed to meet those requirements was illegitimate and would be doomed to fail.

Mr Justice Peter Charleton then reminded the session that, while much debate was centred on US law and practice, the European Union was also in existence -- with its own political and legal structures and its own debate. He outlined the Advocate General's Opinion in the Court of Justice reference in Scarlet Extended (see note here), which appeared to favour the interests of anonymous internet users and internet service providers over copyright owners, and had some kind words for the approach at present adopted in the United Kingdom via the Digital Economy Act (on which see earlier IPKat post here).

IPKat team member Jeremy added a few words about Europe too. He mentioned the parallel existence of the European Court of Human Rights, which has recognised IP rights but has not asserted them ahead of rights of privacy or freedom of expression. He also explained how the Pirate Party now had two members of the European Parliament and that the debate over copyright on the internet was thus being engaged in a rather different manner from that of the United States. Finally he observed that, with the rise of the social media, many providers of user-generated internet content had something of a contradictory attitude towards copyright; they were happy to help themselves to the works of others, but expected their own photos, emails, tweets and other product to be safe from unauthorised use or distribution.

Tiddles wears the dunce's hat again after
forgetting how to spell "syntactically
" unusual juxtapositions" ...

At yesterday's plenary session of the Fordham Intellectual Property Conference, covering issues arising from European intellectual property law, this member of the IPKat team wailed long and loud about what he termed the "over-intellectualisation" of European trade mark law. The Kat has received numerous responses from those attending, ranging from warm support on the one side to a sniffy comment that no-one with academic credentials has any right to complain about something having intellectual content. In the later trade mark-related sessions which he attended in the afternoon, several speakers picked up the same theme: trade mark law in Europe had become almost unmanageably complex.

If readers want an example of the sort of thing the Kat finds unacceptable, here's a current one. He has just heard from the UK Intellectual Property Office that two new conjoined cases have been referred by the German Bundespatentgericht to the Court of Justice of the European Union (ECJ) for a preliminary ruling: Cases C-90/11 and C-91/11 Strigl and others. The question for the court is this:

"Is the ground for refusal under Article 3(1)(b) and/or (c) of the [trade mark harmonisation] directive [2008/95] also applicable to a word sign which consists of a descriptive word combination and a non-descriptive letter sequence, if the trade perceives the letter sequence as an abbreviation of the descriptive words because it reproduces their initial letters, and the trade mark as a whole can thus be construed as a combination of mutually explanatory descriptive indications or abbreviations?".

In case you are wondering, Articles 3(1)(b) and 3(1)(c) are not exactly rocket science. They provide that signs can't be registered as trade marks if they are devoid of distinctive character or consist exclusively of signs or indications "which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services". In other words, you can't have a trade mark for something that's not distinctive or if it is descriptive. In an ideal world, a court would be able to apply these provisions to the facts before it with the need to refer them to distant tribunal and add another two years to the length of the proceedings.

One can imagine situations in which the referred question will be answered "yes" and those in which it will be answered "no"; situations in which the "trade" is also a relevant consumer of goods and services for which registration is sought and those in which it isn't; situations in which the combination of the descriptive word combination and the non-descriptive letter sequence constitutes a syntactically unusual juxtaposition and is therefore registrable (as in Case C‑474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, BABY-DRY) and those in which it is not. The court may also be asked to consider those cases in which the descriptive word combination precedes the non-descriptive letter sequence and vice versa, as well as those in which the descriptive word combination includes a numeral or a place name, and so on.

Any ruling from the court on the question referred in this case is not therefore the end of the question-and-answer process but a launchpad from which subsequent refining questions are fired at the court in the hope of rendering into a verbal format every conceivable combination of facts. This may be intellectually satisfying, but it is not easy for potential trade mark applicants to understand -- or for even well-trained and highly qualified trade mark practitioners to explain.

This particular reference addresses absolute bars to registrability, but the same phenomenon can be found, to a greater or lesser extent, across the whole range of trade mark law -- infringement, cancellation, revocation, comparison of marks, taking of unfair advantage without due cause, referential use, comparative advertising. According to one speaker yesterday (the Kat thinks it was OHIM's Paul Maier but is willing to be corrected) the ECJ has heard some 150 trade mark cases -- a remarkable number which represents around ten cases a year.

For the record, the UK Intellectual Property Office welcomes your opinion on this ECJ reference (if you have one). Just email policy@ipo.gsi.gov.uk before 6 May 2011.

It is always reassuring to know that the ravages of late middle age don't necessarily spell catastrophe. As an IP person, this is especially so when it comes to the ability of media companies to monetize their contents. Thus an article that appeared in The Economist in its April 9th issue caught my attention. Entitled "Peggy Sue got old: Viewers, listeners and readers are ageing fast. Oddly, media companies don't regard that as a catastrophe," I was reassured and read on.

The challenge for media companies is that the average age of consumers of traditional media -- newspapers, radio and television -- is rising even more quickly than the average of of the general population. In the U.S., the average age of viewers for all television networks except for Fox is over 50; in the UK over 40% of readers of the Daily Telegraph and Daily Express are over 65. Instead of waving the white flag in the face of looming octogenerianism of consumers of media, though, media companies have allegedly discovered the potential market of this population.

For example, the CD "Dreamboats and Petticoats", a collection of 1950s vintage UK and US artists, sold enough dics to rank as a double platinum (these are real CDs, since oldsters don't download music, it is claimed). And then there is Susan Boyle, the 50-year-old Scottish singer who recently burst on to the scene and whose album "The Gift" was the top-selling album of last year.

More generally, media companies have reoriented their view of the desired target audience from the traditional 18-49-year old cohort to include the over-50 crowd. For one thing, seniors are less fixed on brands than was once thought, so there is more potential return in targeting them. For another, to paraphrase the legendary U.S. bank robber Willie Sutton, seniors "are where the money is", especially given the ravages of the Great Recession on the employment of young adults.

The article also suggests that changing views of appropriate business models for the media business support increased interest in older consumers. In an advertsing-based model, eyeballs fitting a certain profile matter most. But with the increasing interest in subscription models, you need to hone in on consumers prepared to pay for content, especially of the online variety. While subscription-based distribution is not limited to older consumers (consider, e.g., the move by Hulu to sell subscriptions to viewers of all ages), it is presumed, I guess, that older consumers still remember paying for content and therefore are less likely to have become intractably wedded to free online sites. The name of the game is to get those older viewers to pay, before they too develop antipathy for subscription-fee contents.

All of these observations are interesting, but I have a lingering feeling that the recent discovery of the importance of older consumers is a bit overstated. As an anecdote, I recall the first time that I visited the Rock and Roll Hall of Fame in Cleveland (full disclosure--that is my ancestral home town). The two things that most struck me about the visit were the disproportionate number of visitors who were middle age or older, and the emphasis on rock and roll music from the 1950s and 1960s.

Perhaps the two factors go together, perhaps young adults are less likely to go to museums, perhaps the admission charge dissuaded some younger visitors. Whatever the reason, what is clear is that the Museum has been around since the 1990s and that it seems to me that it has catered to an older crowd from the beginning. What may be more true is not the fact that older consumers have suddenly been discovered but rather that media companies are doing a better job of tailoring their offerings to different age groups, from the younger to the older. As a consumer of media content, better targeting would seem to be a desirable result, whatever the age.

BONUS QUESTION: One final bonus point question: How many of you younger than 45-years of age knew the reference in the title of the article to "Peggy Sue got old" (without resort to Google)?

Thursday, 28 April 2011

After a panic-filled dash back to re-re-rewrite his paper tomorrow, IPKat team member Jeremy returned to the fray, coming in at the tail end of a fascinating session on initial interest confusion in trade mark law. The lively panel discussion, chaired by Professor Marshall Leaffer, turned on some of the most difficult areas: the nature and value of evidence of initial confusion, the extent -- if any -- to which proof of damage should be required, the degree of protection to which as-yet unused trade marks should be treated, the special position of initial interest confusion on the internet through the use of another's trade mark as a keyword. The IPKat looks very much forward to reading the earlier bits of this session when they're published.

With two brains working together,
Eric decided to tackle the deeper
meanings of EU TM law

This session led naturally to the final presentations of the day, by the Kat's old friend Trevor Cook (Bird & Bird) and Marshall Leaffer, when comparing the European and US approaches to protection of trade marks against dilution. Trevor expressed concern that, led by the Court of Justice of the European Union, Europe was making the law up as it went along. He echoed earlier anxieties concerning the over-intellectualisation of the formulation of trade mark concepts, as well as strong academic criticisms of the development of trade mark law, particularly where attempts have been made to claw back some of the arguably over-wide protection accorded to trade marks in some circumstances. The overlap of regular infringement and dilution is one such area of contention. Citing decisions such as L'Oréal v Bellure, Trevor observed that concepts like "unfair advantage" and "without due cause" -- which do exist in European statute law -- receive little attention, while terms that have no legal basis such as "parasitism and "riding on the coat-tails" do.

Marshall Leaffer then took the audience through some 9th Circuit dilution decisions, leading with Visa v JSL Corp 610 F3d 1088 (2010) which affirmed that dilution was a question of fact, not law, and that, where a strong mark such as VISA is at stake, summary judgment is highly appropriate. Perhaps surprisingly the court accepted that establishing a likelihood of confusion didn't require a plaintiff to produce expert testimony or market surveys: the characteristics of the mark might be relied on by themselves. The parallel existence of the word "visa" as a regular noun with a dictionary meaning did not undermine the word's trade mark meaning: what was significant was the way it was used. Marshall also consideredLevi Strauss v Abercrombie & Fitchand the degree of similarity which was needed in order to establish confusion.

Following the two "meet the judges" sessions which concluded the morning programme, lunch was declared -- with David Kappos (US patent supremo and fellow blogger) as the guest speaker. David described patents as the premier currency of global trade; this currency must not be devalued by failure to keep it relevant. This meant cutting pendency times, reducing unnecessary duplication of office work and looking at the big picture rather than focusing on the minutiae [which, as Merpel sadly notes, is what many fine academics, practitioners, administrators and judges are paid to do].

David then reminded us of the need to take account of developing nations when considering substantive patent law. He gave Europe quite a pat on the back for its efforts in harmonising substantive patent law and confessed to a rapt audience that this really excited him. Refreshed by the gentle pitter-patter of raindrops to which many diners were treated in the Fordham atrium, but with the looming presence of Hugh Hansen making itself felt, David concluded with a message that we should all reach out, work together, rise to the challenge and generally feel good as we put the patent world to rights.

Following lunch, this Kat took himself off to the stream dealing with European trade marks and designs. First up was Annette Kur, an eminent scholar at the Max Planck Institute and a member of the team which authored the recent study on the European trade mark system for the European Commission. Annette explained the background to her study, which is now under consideration by the Commission (proposals, which may or not be based on the study, are expected this autumn or, more realistically, next spring). She also reminded us of the significance of the Community trade mark as a unitary right within the context of European borders and of the non-competitive relationship between OHIM and the national offices.Among the topics she fastened on was that of 'cluttering' of the register, something which many users of the system believe to exist but the existence of which is difficult to prove.

Annette was followed by Paul Maier (speaking for the second time today), who spoke on the problems raised by descriptive trade marks in a region which contains 23 official languages as well as many languages (Russian and Turkish among them) that are not official but are nonetheless spoken by many inhabitants of the region. Paul reviewed the issue through the lens of the Matratzen litigation, concerning a word which was entirely descriptive of mattresses in German but was quite distinctive for mattresses in Spanish. The Court of Justice took a conservative line, affirming the distinction between the existence of a mark and its exercise: the mark should be registrable but purely descriptive uses would not infringe (Paul also mentioned the Omega 3 case). Paul felt that national offices should check descriptiveness in languages other than their own, to avoid the appearance that people are deliberately registering foreign descriptive words as trade marks.

Gordon Humphreys (OHIM Board of Appeal member) then spoke on registered Community designs. He reviewed four recent decisions: T-09/07 Metal Rappers, T-148/08 Instruments for Writing, T-153/08 Communications equipment and T-513/08 Ornamentation. These cases, the first and fourth of which are on appeal to the Court of Justice, were pretty depressing news for the audience.

The panel discussion focused first on the Max Planck study, which was by general assent well received and much appreciated. Enforcement within Europe, greater consistency as between and within offices and proof of acquired distinctiveness of non-traditional trade marks.

The next segment of the Fordham programme was devoted to IP in Europe, staring with a presentation from Paul Maier (OHIM), who gave an up-to-the-minute account of the progress of trade mark grant and administration operations in his Office, magisterially dismissing Hugh Hansen's attempts to draw him into saying there was any competition between OHIM and trade mark-granting offices at national level. Paul also vigorously asserted the need for trade mark examiners and Board of Appeal members to act within the framework of recognised legal guidelines when determining issues such as similarity of marks and likelihood of confusion, notwithstanding the opinion of certain fictional felines that those guidelines were hopelessly overintellectualised and were impossible to explain clearly to businessmen and law students.

Also speaking in this session -- and also taking advantage of the absence of European Commission heavyweights on the panel -- was Silke von Lewinski (Max Planck Institute for IP). Mentioning the complexity of copyright as a subject, she articulated something which many of us had wondered, which was the observation that the Commission was perhaps less well-endowed with seasoned scholars of copyright law than it may have been in earlier times, and that could be argued that a measure of deep knowledge of the working of the subject might be viewed as an obstacle to progress rather than as a means of achieving it.

There being no patent people speaking, the task of reviewing patent law developments in the European Union was split between David Rosenberg (Glaxo SmithKline) and Tom Vinje (Clifford Chance). There was a consensus that the current failure to achieve a unitary patent litigation system was frustrating but that it was better to take longer and get a technically workable solution than jump ahead to a system which didn't work to optimum effect even if had the supreme advantage of being politically acceptable.

Following an unscheduled mid-session break, the speakers and panel covering IP issues in the US took the platform. The Kat, having been on the previous panel and then being serially detained by friends and questioners on his way to and from the coffee table, was delayed getting back to his coveted front-row seat. He did however have the joy of watching a thoroughly effective mini-movie, shown by John Morton (Director, Immigration and Customs Enforcement), on the all-too-rarely-perceived link in the minds of the US public between illegal copying and the loss of jobs among those working in the legitimate copyright-driven sectors.

This session led to a discussion of Google Book, the legitimacy of the project, whether it was good or bad, whether it was even capable of being stopped and whether anyone else was capable of competing against it. The question was also asked whether legislation, not settlement-plus-litigation, was the better way of sorting out conflicting claims of stakeholders. PanellistPaul Michel observed that there was a Congressional bottleneck here, while Professor Arti K. Rai characterised the ailment as Congressional incompetence.

Antony Taubman(head of Global IP Issues, WTO) spoke first, asking what the trade-related aspects of TRIPS actually are. Tony reassured us all that TRIPS, post-Doha, was alive and well. Topics under the TRIPS microscope include the iPod economy and the iTunes economy, as well as the dispersion of chains of product creation, manufacture and distribution -- and even a spot of dispute resolution.

Tony was followed, almost as soon as he had started, by James Pooley (WIPO Deputy DG for patents), who affirmed that IP was just one of a number of trade issues, which meant that we have to speak to non-IP people too in order to identify and resolve modern trade issues. James explained some of the dynamics of multilateral and plurilateral discussions, and the problem of "lost voices" among players who have no opportunity to be heard. James contrasted the way negotiations on ACTA were conducted with the highly open operations of the IP Five, who now have their own website.

Stanford McCoy (Assistant US Trade Represenative for IP and Innovation) then reviewed regional, pluri-, multi- and bilateral IP talks from a national government's point of view. These options are not exclusive, he observed, and are all responses to questions raised. Stanford praised ACTA for the very open manner in which it produced so many texts in such a short time, though this Kat can't recall hearing him make mention of the word "leaks" -- the means by which he, Merpel and their many friends discovered what was actually happening. In a beautiful metaphor, Stanford also described ACTA as a tree on which IP owners could hang their anxieties.

These speakers then gave way to the panellists, starting with Mihaly Ficsor. Hugh Hansen asked if individuals can ever make a difference to IP policy any more. Mihaly said "yes", he had made an individual contribution, and so did Francis Gurry -- as his speech on the Future of Copyright showed (see here for the Gurry/WIPO position on copyright).

Amidst much talk of the need for flexibility, leaving doors open, the need for watchfulness and similarly grand propositions, the session came to a close.

Tuesday, 26 April 2011

IPKat team member Jeremy will be a bit scarce for another week or so, there being the serious matter of this year's trip to New York and back for the Fordham Intellectual Property Conference. Accordingly, he thought the time might be ripe to report on some of the blogs to which members of the IPKat team contribute in one way or another. In no particular order there are

Art & Artifice, a weblog that focuses on not just intellectual property but all areas in which art meets the law. This is a newish blog, born in January of this year (http://aandalawblog.blogspot.com)

The 1709 Blog caters for the copyright enthusiast. Its team of six, drawn from a variety of backgrounds and interests, seeks to address all aspects of copyright law and practice (http://the1709blog.blogspot.com)

The SPC Blog is a handy information source for anyone who is involved in the tiny but invaluable world of supplementary protection certificates for pharmaceutical and agrichemical patents. This blog holds an annual seminar, which is free, for anyone who wants to attend (http://thespcblog.blogspot.com)

PatLit tackles a wide range of patent dispute resolution topics, not just from the UK but from wherever interesting news and comments emerge. It hosts the PCC Pages series of posts on how the Patents County Court, England and Wales, can deliver cheaper patent litigation (http://patlit.blogspot.com)

IP Finance touches that delicate interface between intellectual property and the world of finance, addressing securitisation, valuation, royalty rates, assessment of damages, the death of old business plans and the evolution of new ones (http://ipfinance.blogspot.com)

Class 46, founded by friends of MARQUES and driven by a 15-strong team, this blog delivers trade mark and brand-related news and developments from across Europe. Class 46 is now hosted by MARQUES (http://www.marques.org/class46/)

Class 99 is dedicated to design law and practice in the UK, in Europe and beyond. It is written by a team of acknowledged experts in the field (http://class-99.blogspot.com/)

The Journal of Intellectual Property Law and Practice, published by Oxford University Press and edited by IPKat team member Jeremy, has both an official website and its own blog, jiplp (http://jiplp.blogspot.com), which posts some of the journal's content along with related news and features.

The IPKat is of course always interested to hear about other IP weblogs and to spread the word to other readers, via his regular Monday, Wednesday and Friday round-up features. If you know of a newly-launched IP blog, or if an existing blog has just undergone a major change, do please email the IPKat hereand let him know.

The IPKat's creative and imaginative friends at Anti Copying in Design (ACID) are full of surprises. One such surprise -- designed to brighten up today's World Intellectual Property Day celebrations -- is the launch of IP Tracker, which the organisation describes as "a simple, cost effective digital method of tracking delivery of IP led and confidential information". ACID explains further:

"It is a natural electronic addition to the already successful ACID Design Data Bank which holds over 350,000 copies of unregistered designs. All too often, design ideas and new product designs are stolen at the vulnerable stage of sending them to third parties. The IP Tracker, reinforced by the powerful ACID brand, will be an additional tool of self help ensuring a further layer of IP awareness. ing receipted evidence of sending reverses the burden of proof and makes it easier to take action.”

The Copyright Clearance Center has been busy again. Its latest production number is a fresh “Beyond the Book” podcast in which CCC’s Chris Kenneally interviews Christoph Brem (Attributor), Devereux Chatillon and Brian O’Leary (Megellan Media Partners) about protecting copyright in the digital age at the Publishing Business Conference & Expo. Brem discusses the ecosystem of copyright infringers and how to track and understand how the pirated information is being used. O’Leary finds that piracy can be a great marketing mechanism, with books that were pirated showing greater sales. Chatillon then ties in aspects of both Brem and O’Leary’s conversation in relation to the production of Harry Potter’s 7th book. The discussion ends with discussing how the lack of knowledge and understanding of the changes made in copyright have made it harder to solve problems. Podcast here; transcript here.

Turkish IP Delight. The Boğaziçi University, in cooperation with the Turkish Patent Institute, recently held an international conference on Managing Intellectual Property in Universities. From this link to the conference's website it should be possible to access the presentations of the panelists. Thank you, Mehmet Artemel, for providing this information.

Following his recent pensées ("Two Riffs on Sublicensing", here), our transaction-oriented Kat Neil thanks readers for all their interest in his work-in-progress PowerPoint on sublicensing. He adds:

"In truth, these materials have laid fallow for the last year or so. All of your comments are most welcome with the hope that we can collectively improve the awareness among our colleagues of this neglected topic".

The moto of this year's celebrations is "designing the future", hoping to raise awareness that besides patents, trademark and copyright, there is that other intellectual property right, the registered design. The UK IPO celebrates the day with a special website.

The Nigerian IPO, on the other hand, submitted a poster to WIPO (depicted), but still does not have a website. Other examples of publicity material from various countries can be found on WIPO's website and provide an interesting glimpse into different cultures. Contrast Kenya's entry from 2002 with Korea 2006, and you get an impression of what I mean. Kenya's Intellectual Property Office, btw, officially has a website, but it seems unavailable. No points for guessing that the website of South Korea's IPO is not only up and running, but looking very professional and automatically redirecting users with English set as default browser language to the English language version of the page.

Sunday, 24 April 2011

The AmeriKat has been enjoying the warmth of the sunbeams that have danced across her numerous files, spreadsheets and bundles this past week. The warmer weather brings out the summer clothes and English smiles, but also insects. Almost this time last year the AmeriKat was in the throws of a biblical scale warfare with swarms, floods, and drought inflicting her house. She had hoped that the spring and summer of 2010 was a blip in the calendar of insect infestations she would have to deal with, but alas, with the warmer weather the ants are back. She has now found the gap in her floorboards were the pesky insects have been arriving from, but like plugging a hole in a leaky boat, the water will always find somewhere else to spill in from. So instead of lounging out in the sun, dying eggs, eating chocolate and drinking lemonade on Easter Sunday, she is instead attacking any small six-legged body racing across her floor. (picture, left- the AmeriKat inspecting an alleged Easter bunny)Happy Easter from the AmeriKat!

Bratz Beats Barbie with $89 million jury-award

From pesky six-legged insects, to perky two-legged dolls. Last week a Californian federal jury issued their verdict in favor of Bratz (picture, right) in the now-famous copyright and trade secret battle between Barbie and Bratz (see previous reports here). Barbie's maker, Mattel, had alleged that the maker of the Bratz doll - MGA Entertainment- stole the idea for the Bratz doll by entering into a deal with the designer of the doll, Carter Bryant, who had previously worked for Mattel. Mattel subsequently filed a lawsuit for copyright infringement and trade secret violations, while MGA alleged unfair competition and also trade secret theft. This case was heard by first by Judge Larson who ruled in favor of Mattel, but that $100 million verdict was overturned on appeal. The Court of Appeals for the Ninth Circuit heldthat the federal court judge had erred in ruling that Mattel automatically owned the designer's sketch of the doll under the terms of the 'Employee Confidential and Inventions Agreement' between Mattel and the designer and remanded the case back to the federal court.

Bryant's employment agreement had assigned all rights, titles and interests in any such inventions, patents and copyrights to Mattel. The contract defined "inventions" as including, but not limited to, discoveries, improvements, processes, designs and know-how. The district court had held that this agreement assigned Bryant's ideas to Mattel despite 'ideas" not being included on the list or mentioned anywhere else. Mattel argued that the list of examples in the contract were illustrative not exclusive, but the Court held that "ideas" are "markedly different from the list of examples including discoveries, improvements and designs" (People ex rel Lungren v superior Court (1996)). (picture, left - no amount of law school could prepare Lawyer Barbie for the cruelty of a jury verdict) The Court of Appeals stated that the contract was arguable capable of either including or not including ideas, but that the trial court did not recognize this ambiguity and thus did not examine the extrinsic evidence before it on this issue.The Appeals Court concluded that the agreement could be interpreted to cover ideas, but that the text of the agreement did not compel that reading and thus remanded the issue back to the district court. They stated that:

"Designs, processes, computer programs and formulae are concrete, unlike ideas which are ephemeral and often reflect bursts of inspiration that exist only in the mind."

At the end of last year, Mattel and MGA applied for summary judgment on the issue of copyright infringement for the first and second generation Bratz dolls. Judge Carter granted summary judgment in MGA's favor in respect of the second generation Bratz dolls, but the remaining issues, including breach of copyright for the first generation of Bratz dolls and the breach of confidence/trade secret claims, remained for trial. The court was tasked with determining whether the Inventions Agreement entitled Mattel to Bryant's ideas for names like "Bratz" together with sketches that he created outside working hours. Also, ripe for ruling was MGA's trade secret claim against Mattel through a campaign of corporate espionage, whereby MGA alleged that Mattel's employees gained access to regulated private MGA toy showrooms by deceptive means.

On Thursday, a federal court jury in Santa Anna, California, found in favor of MGA and following the Court of Appeals opinion held that Mattel did not own the sketches or ideas for the Bratz dolls. The jury verdict also held in favor of MGA's counterclaim that Mattel had willfully misappropriated trade secrets and slammed Mattel with a $88.5 million damages price tag. A slight saving grace, albeit an insulting one, was that the federal jury also found that MGA had interfered with Bryant's contract with Mattel and issued Mattel a $10,000 award for the interference.

Although the battle may not be over with reports that Mattel will file a motion for a retrial within two weeks and will reserve the right to appeal, the case does remind everyone of the importance of carefully drafted employee contracts, as well as taking the business decision to litigate over seven or so years even if it costs your shareholders $400 million (see MSN money report here). However, if Mattel's intention was to quash the rival dollmaker, the litigation may have just done that. MGA's CEO, Isaac Larian is reported as saying that the Bratz brand "will never be the same level it was before."

The IPKat will keep you posted on any further developments in the case.

Tony Duquette seeing Spots with J.Crew sweater

Tony Duquette, Inc, the proprietor of the various IP rights associated from the late namesake artist and designer filed a trade mark infringement suit against clothing retailer and AmeriKat favorite, J.Crew in a New York federal court last week. For those not in the know, the late Tony Duquette was a Tony award-winning designer and artist who counted Elizabeth Arden and the Duke and Duchess of Windsor as clients. Tony Duquette allege that J.Crew has infringed the DUQUETTE name and trade mark by producing and selling a sweater with the style name the "J.Crew Duquette Factory Leopard Print". The complaint alleges that J.Crew knowingly and willfully used the DUQUETTE trade mark in connection with their leopard print sweater because of Duquette's alleged unique association with leopard prints, in particular with woven and printed textiles including carpets and tapestries. (picture, left - a fabric design by Duquette) The AmeriKat is seeing more and more product descriptions that use trade marked words become the subject of trade mark disputes. In the UK, one can always invoke the fun game of whether the product description is being used as a function (of many, many functions) of a trade mark. In the U.S., the case is arguably little more straightforward.

Albeit having not read the complaint, the AmeriKat's gut instinct is that there is not enough here to satisfy the test of trade mark infringement. i.e., namely where is the confusion and whether Duquette has enough reputation in his name associated with leopard print textiles to claim dilution? Further live trade mark registration for DUQUETTE the AmeriKat found on USPTO is for tapestries of textiles, carpets and rugs - not apparel (Reg No. 3863326). The AmeriKat perused J.Crew's website today and found one leopard print sweater which is called the "Wild spots cardigan" - a very un-J.Crew product name - so her guess is that J.Crew has already taken steps to change the name of the contentious product. The Amerikat predicts this lawsuit to die a quickish death, just like the animal print trend of last season.

Apple v Samsung v Apple v Samsung v Apple....

Last year the AmeriKat was constantly up-to-date reporting on the latest of the patent mobile phone wars. She has now officially lost track, except for the latest of the battles now between Samsung and Apple. Apple sued Samsung two weeks ago in California federal court for trade dress, design patent, trade mark and patent infringement against Samsung's Galaxy line of smartphones and tablets. Apple allege that Samsung's products are copies of the iPhone and iPad designs including the "icons with the rounded corners."

The incestuous ties of the smartphone and tablet manufacturers and retailers are felt in this case. In 2010 Samsung earned a reported $5.7 billion revenue from Apple by way of their purchase of Samsung semidconductors. Tim Cook, Apple's CEO, told the Wall Street Journal that Apple is

"Samsung's largest customer, and Samsung is a very valued component supplier to us, and I expect the strong relationship will continue. Separately from this, we felt the mobile communication division of Samsung had crossed the line, and after trying for some time to work the issue, we decided we needed to rely on the courts."

The litigator in the AmeriKat sensed a nice little bargaining chip for Apple in this suit, however not to be uncharacteristic in this type of litigation Samsung then "countersued" Apple last week, but not in the U.S. Samsung filed patent infringement lawsuits against Apple in Korea, Japan and Germany alleging violations of patents filed in each of those jurisdictions. The allegedly infringed patents involve "transmission optimization and reduction of power usage during data transmission, 3G technology for reducing data-transmission errors and a method of tethering a mobile phone to a PC to enable the PC to utilize the phone's wireless data connection." The speed in which these lawsuits were filed indicate that Samsung may have been preparing itself for this counter-attack for sometime.

This latest chapter in the mobile patent war saga again demonstrates that when it comes to litigation surrounding smartphone technology, the best defence that is repeatedly being employed by parties is that of pursuing offensive litigation strategies on a global level. Whether or not that will prompt the parties to settle sooner is not a certainty, but the more complicated and more jurisdictions in which a company has to battle, the more attractive it becomes to resolve the dispute before litigation costs rocket and stated commercial relationships are massively affected.

It’s Easter Sunday (or just plain Sunday depending on your beliefs), and anyone out and about over the past few days cannot fail to have noticed the chocolate eggs, hot cross buns and miscellaneous cakes (the Kat, it will be noted, deftly sidesteps engaging in extended debate over whether the hot cross bun is a member of the cake family or whether it is merely a type of bread (as some would have you believe), preferring to concentrate on more IP-centric matters…) that mark this particular period in the calendar. The egg is a symbol of new life (or, if you think back to the 1980s, possibly salmonella – the Kat, however, does not wish to dwell on this particular image for obvious reasons, even though it is tangentially relevant to his point), and Easter is traditionally perceived as a time of rebirth – from eggs and chicks to frolicking lambs and fields of daffodils and tulips. A chance encounter with a car advert (bear with me, this is not as incongruous as it might seem) got this Kat thinking. Let him explain:

When he was but a kitten there was one car which, above all others, was the butt of jokes: the Skoda. No matter how reliable, economical, comfortable or successful the Skoda was (and during the 1970s and 1980s Skodas were very successful: their ubiquity on British roads, fine rallying credentials and general consumer satisfaction with them all being testament to this fact), they were still the car that you wouldn’t be seen dead in. This Kat had friends that preferred to walk to school in the pouring rain than be dropped off by their parents in a Skoda. Undoubtedly had they pulled up to the gates in a Skoda Estelle (such as the one left) then they would have been met with a barrage of witticisms (!) such as:

“What do you call a skip with wheels?”

A Skoda.

"What do you call a Skoda with twin exhausts?"

A wheelbarrow.

"Have you got a wing mirror for a Skoda?"

Okay, seems like a fair swap.

… but even so, a day spent in damp clothes was apparently worth more than the loss of face that accompanied being seen in a Skoda. While not the pinnacle of humour, these jokes certainly got a laugh around the playground – but then again so did a number of other things which, in retrospect, were not all that funny even at the time. Nevertheless...

Then Volkswagen got involved, and things began to change. From a partnership agreement in the early 1990s through the final takeover in May 2000 to the public face of Skoda that we see today, the brand has been reinvigorated – reinvented even: a Skoda is now a car to be proud of. The cars themselves were always tough and reliable, but the public's perception of them has completely turned around. Which brings the IPKat to ask whether readers can think of another brand resurrection akin to that performed with Skoda. He can think of a number of brands that have had new life injected into them, such as Cadbury’s “Wispa”, Fiat’s “500”, and even “Old Spice”, but none that have undergone such a complete reversal of reputation. Is Skoda the only modern day brand phoenix?

Friday, 22 April 2011

The IPKat team takes this opportunity to wish everyone a good Friday, or a good Good Friday, depending on their preferences. Oh, and don't forget to check the Forthcoming Events page, will you ...?

Crown copyright: another
great British invention ...

Earlier this week, in "Lorem ipsum dolor sit amet ... IPO search for Latin lovers?" (here), the IPKat reported on the beta version of Ipsum, the UK Intellectual Property Office (IPO) system for inspecting patent documents online. There has been some discussion, and some misunderstanding, regarding the non-availability of documents generated by third parties. The IPKat can clarify the position as follows:

* The beta version of Ipsum currently online includes documents in which there is Crown copyright, but not documents in which it does not hold the copyright. There is however a Consultation on Amending the Patents Act to provide for online patent document inspection here. The proposal is that the Patents Act 1977 be amended to provide for a relevant exception to copyright which would let the IPO introduce online inspection services for documents sent to it but in which it does not own the copyright. If you think this is a good idea, you can tell the IPO by email to this address by Tuesday 26 April. There's not much time to act, so please get a move on!

* the name Ipsum represents “the sum of information on patents”. In Latin means "the very thing itself". This is a nod to the Latin origin of the word “patent” and the fact that the service allows users to see the very documents themselves [so long as there's no copyright issue ...].

The IPKat has also heard that someone down in the Land of the Patent Cooperation Treaty (PCT) has taken an interest in Ipsum, which has already been linked from WIPO's very own Patentscope "Gateway to patent services and activities". According to the IPKat's reliable source,

"For all international applications where we’ve had a notification of entry into the GB national phase, there is now a link from the “national phase” tab of WIPO’s Patentscope PCT publications and public file inspection database to the national phase details for that application. See, for example here. We also provide similar links for other Offices where we have the necessary information to link directly to the relevant systems for other national phases. We hope that the coverage will further increase soon".

Around the weblogs. The 25th in PatLit'sPCC Pages series, posted here, deals with some of the issues involving the transfer of proceedings between the cheap and cheerful Patents County Court for England and Wales and the not-so-cheap but increasingly cheerful Patents Court. IP Finance carries another insightful piece from fellow Kat Neil J. Wilkof, "What To Do in the Face of a Patent Cliff: A View from Medium Pharma", here, with coda here, which is well worth thinking about. Afro-IP asks whether the emergence of South Africa's Office of Companies and Intellectual Property Enforcement (OCIPE) is a positive step or not much more than a rebranding exercise, while in IP Tango Patricia Covarrubia reports that Mexico is the latest jurisdiction to lament the ill effects of piracy and smuggling on its economy (of which these activities are estimated to account for some 30%).

Looking for something to read this weekend? The Annual Report of the Office for Harmonisation in the Internal Market (OHIM) for 2010 is now available online from OHIM here. According to sources close to the throne,

"... The report reflects the Office’s wide range of cooperation activities, and has been prepared in the form of a website, making extensive use of video and graphics in an effort to make it appealing to a wide cross-section of the public.

As well as the usual range of statistics, the report includes a six-minute video summary, a video message from the President, and interviews with senior staff and many of our stakeholders including national IP offices and user representatives.

This year’s report celebrates the cooperation between OHIM and all our stakeholders in trying to make the IP system work better. In particular it charts the progress being made in partnership with them on Cooperation Fund projects, which is designed to deliver common tools and standards that will shape the future of IP in Europe for the next decade".

For those who like to be reassured that there is always someone working harder than themselves, this month's new reading matter also includes The Workload of the Court of Justice of the European Union, here.

Thursday, 21 April 2011

It is not often that this particular Kat stumbles into the realm of the Administrative sub-division of the High Court, however when the occasion demands he is ready to take one for the team and roll up his furry sleeves to get to work. As reported in most of the main news outlets this morning, the Administrative Court, wearing the face of Mr Justice Kenneth Parker, handed down its judgment yesterday in R (on the Application of British Telecommunications Plc & TalkTalk Telecom Group Plc) v The Secretary of State for Business, Innovation and Skills [2011] EWHC 1021 (Admin), concerning BT and TalkTalk's application for judicial review of the Digital Economy Act 2010. For those interested in the numbers, it took Mr Justice Parker just under 35,000 words, split into 265 paragraphs, to dismiss BT and TalkTalk's application on all grounds. The Kat hands over to the Department for Culture, Media and Sport, which issued the following press release:

"The High Court today ruled in favour of the Government in a judicial review of measures to tackle online copyright infringement in the Digital Economy Act. Mr Justice Kenneth Parker upheld the principle of taking measures to tackle the unlawful downloading of music, films, books and other copyright material. BT and TalkTalk had brought the judicial review, claiming that the measures in the Act were not compliant with EU law and were not proportionate. The judge rejected the challenge.

The judicial review also considered the statutory instrument that splits the cost of the Act’s mass notification system between rights holders and internet service providers. The judge ruled ISPs could be made to pay a share of the cost of operating the system and the appeals process but not Ofcom’s costs from setting up, monitoring and enforcing it. The Government will now consider changes to the statutory instrument.

The Government has asked Ofcom to review section 17 of the Digital Economy Act. Ofcom are assessing whether the Act’s reserve powers to enable courts to block websites dedicated to copyright infringement could work in practice. They are due to report to the Government shortly.

Responding to the judgement, a DCMS spokesperson said:

“We are pleased that the Court has recognised these measures as both lawful and proportionate. The Government remains committed to tackling online piracy and so will set out the next steps for implementation of the Digital Economy Act shortly.”"

Wednesday, 20 April 2011

Entomophobes, among others, will recall the clutch of cases that form the backdrop to this morning’s judgment of the Court of Appeal (Jacob & Jackson LJJ and Sir John Chadwick) in Vestergaard Frandsen & Ors v Bestnet Europe & Ors[2011] EWCA Civ 424. Mr Justice Arnold had originally decided the case in April 2009 (the “main judgment” – [2009] EWHC 657 (Ch), noted by the IPKat here), but there followed three further decisions on remedies (the “remedies judgment” - [2009] EWHC 1456), liability for subsequent versions of the defendant’s products (“WHOPES I” - [2009] EWHC 1623 (Pat)) and, more recently, a judgment following remittal to consider additional questions of fact (the “remittal judgment” - [2011] EWHC 477 (Ch)).

Like the interconnected strands of a cobweb, the first instance judgments (all 1,007 paragraphs of them) disclose a complex tale of scandal and intrigue in the world of insecticidal fabrics manufacture. The Kat will attempt to summarise:

Vestergaard owned the rights to some technical trade secrets which, for the purposes of this tale, resided in a database called Fence. Fence was an extensive repository of ingredients and their proportions used to make long-lasting insecticidal nets (LLINs). It also contained the results of various tests that had been carried out on the nets. LLINs, as the name would suggest, are formulated so as to retain relatively long-term insecticidal properties. The insecticides are not simply sprayed on, or infused into, pre-made fabrics, they are incorporated into the plastic itself before it is extruded into filaments used to form the nets. The idea being that the insecticide gradually leaches out of the filaments ensuring an insecticidal surface remains over a protracted period even if the net is repeatedly washed.

In the summer of 2004 two of the individual defendants, Mr Larsen and Mrs Sig [Merpel notes that if you put them together you’re only a few letters and a typewriter away from a Swedish crime trilogy], left the employment of Vestergaard and entered into competition therewith. They did so in association with a scientist, Dr Skovmand, who was experienced in the field and who, although not previously employed by Vestergaard, had been engaged as a consultant by the company for a long time. As noted in the Court’s judgment (at [5]): he was, in effect, Vestergaard’s head of development.

As is typical in cases such as this, Mr Larson, Mrs Sig and Dr Skovmand were not entirely above board when disengaging themselves from Vestergaard – indeed, the Court of Appeal refers to their dishonesty and lack of truthfulness on more than one occasion (although it must be said that Mrs Sig attracts less criticism than the others – a point that becomes more relevant later). Vestergaard accordingly claimed that the defendants’ product, NetProtect – a long-lasting anti-mosquito bed net – had been developed using confidential information derived from Fence. Mr Justice Arnold, at first instance in the main judgment had held that Vestergaard was correct, and ordered an injunction. Thereafter, in the remedies judgment and in WHOPES I the Judge concluded that later variants of the NetProtect product should not be injuncted. He noted that despite their formulation being derived from misuse of the confidential information, the products in question differed in particular respects (see the remedies judgment at [107] to [110]). Moreover, they owed a lot to independent work carried out after the defendants’ disengagement from Vestergaard, and so an injunction would have been a disproportionate remedy in the circumstances.

Before the Court of Appeal, the defendants alleged that the Judge had been wrong to conclude that the Fence database had been used in the creation of NetProtect. Rather than extracting recipes from Fence, Dr Skovmand had simply relied on his general skill and knowledge which he was perfectly free to use for the benefit of a competing enterprise following his severance from Vestergaard. The Court of Appeal did not agree. Upholding the decision of the Judge, Jacob LJ (with whom the others agreed) explained (at [19] to [24]) that there were various “odd numbers” in the defendant’s formulation that bore a striking similarity to figures in the database: these needed explanation. The Judge had, “with considerable care and detail”, addressed these “odd numbers”, and concluded that Dr Skovmand had not just used his general skill and knowledge or matter in the public domain to arrive at the formulation for NetProtect:

[23] “It was a case of his using the detailed results in the Fence database so as to choose recipes for NetProtect which, based on those results, were likely to be successful, as indeed they were and were predicted to be from the outset. Indeed I cannot imagine any good reason why the defendants should have lied and forged to cover their tracks if the Fence database had not been used.”

Just because the defendants could have arrived at the formulation for NetProtect by their own research did not mean that they had done so. They had taken a short cut. The Judge had been correct in his finding.

The Court also upheld the Judge’s findings in the remittal judgment concerning the relative irrelevance of difference in the levels of LDPE (low-density polyethylene) in the NetProtect product when compared to the Fence database recipes. The Court noted that even though increasing the proportion of LDPE would have increased the migration rate of the insecticide in the nets, making it leach out more rapidly, there was no evidence that the differences were such that this would have a material effect in the current case.

The point of most interest, however, arose in the context of the third issue on appeal – the liability of Mrs Sig. An obligation of confidence had been imposed upon her by her contract of employment with Vertergaard. This obligation explicitly continued after termination, but was limited to Vestergaard’s trade secrets. The Judge had concluded that:

[23 of the remedies judgment] “…Although Mrs Sig was not personally involved in devising the initial NetProtect recipes or carrying out the trials, she was closely involved in setting up both Intection and Bestnet and in the commercial side of the development of NetProtect.”

He continued:

[24 of the remedies judgment] …A person can be liable for breach of confidence even if he is not conscious of the fact that what he is doing amounts to misuse of confidential information: see Seager v Copydex Ltd [1967] 1 WLR 923…. [Therefore, whilst] a person who is not otherwise subject to an obligation of confidence (e.g. by contract) will not come under an equitable obligation of confidence purely as a result of the receipt of confidential information unless and until he or she has notice (objectively assessed by reference to a reasonable person standing in the shoes of the recipient) that the information is confidential… [This does not apply where an obligation already exists].”

Accordingly, the Judge considered that Mrs Sig could be found liable for breach of confidence absent a finding that she knew that NetProtect was derived from the Fence database.

The Court of Appeal did not agree. Jacob LJ explicitly rejected Vestergaard’s argument that “once the law imposes an obligation of confidence, whether in equity or as a matter of contract, the obligation is broken where the obligee uses the information, even if unknowingly”. He explained that this argument was:

[47] “…far reaching. An obligation of strict liability is itself very serious. When one considers that the court can grant (and in the case of Mrs Sig has) grant an injunction restraining the individual from using confidential information which the individual does not have and never had, the extent of the suggested obligation is exposed with even greater effect.”

Seager v Copydex, relied upon by Vestergaard and the Judge, was distinguished on the basis that there the defendants were actually using the information, albeit unconsciously. Jacob LJ concluding that:

[50] “…the Judge was wrong to hold that Mrs Sig was guilty of breach of confidence. She behaved reprehensibly in a number of ways. But breach of confidence was not one of them.”

Vestergaard’s cross-appeal against the Judge’s findings that the defendant’s newer variants (WHOPES I and II) did not infringe was dismissed. The Court noted that proportionality was certainly a relevant consideration when deciding whether to grant an injunction to restrain a breach of confidence:

[57] “The passage of time is likewise relevant. After all what the defendants did was to cut a corner, getting on the market earlier than if they had not misused confidential information. Mr Gary Howe, in cross-examination, had accepted that scientifically the defendants could have developed their product independently – time was saved and perhaps not a very great deal of it. By the time of the WHOPES I product the head start had much less significance. That was a matter which the Judge was properly entitled to take into account.”

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